DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 27 April 2026 has been entered.
Claims 21, 24-27 and 29 are pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 29 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In reference to claim 29, Figs. 3, 4, 6, 7, 14 and 15 depict embodiments utilizing a piston and Figs. 9-12 depict an embodiment utilizing an expandable membrane. Claims 21 and 24-27 are directed to the embodiment utilizing a piston. The only disclosure of a “frustoconical portion” is in relation to the embodiment utilizing an expandable membrane as depicted in Fig. 12 and par. 0084 of the PGPUB of the application. There is no embodiment disclosed that includes both a piston and a frustoconical portion and the thus the combination of features in the claim is considered new matter.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21, 24-27 and 29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In reference to claim 21, the claim recites “the first fluid of each of the plurality of lung modules are similar or dissimilar” in line 12. Since the phrase “similar or dissimilar” encompasses all possibilities and there is no special definition disclosed in the specification, it is unclear how the phrase is intended to limit the scope of the claim. For purposes of examination the recitation will be given its plain and ordinary meaning of encompassing a first fluid of any type.
Additionally, in reference to claim 21, it is unclear what is required by the recitations of lines 18-19. The claim is directed to a power generating system comprising “a pod system”, but line 18 recites “a plurality of pod systems is operable...” so it is unclear whether a system comprising a single pod system, a single pod system capable of operating with another pod system, or a plurality of pod systems would meet the limitation of the claim. For purposes of examination the limitation will be interpreted as requiring a single pod system capable of operating with another pod system.
Claims 24-27 and 29 depend from claim 21 and are rejected for the same reasons therefrom.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 21 and 24-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0298796 A1 to Dunn (Dunn) in view of US 2008/0092535 A1 to Razack (Razack).
In reference to claim 21, Dunn discloses a power generating system comprising: a pod system (45; Fig. 1A) comprising a plurality of lung modules (1; Figs. 1A, 1B), wherein the pod system is moveable between a first position and a second position within an enclosed subterranean environment (“moveable between” is interpreted as intended use; however, see par. 0115, “well with casing”); each of the plurality of lung modules comprising at least one first chamber (5) and at least one second chamber (3) separated by a piston (6), wherein the at least one first chamber comprises a first fluid (4) and the at least one second chamber comprises a second fluid of the enclosed subterranean environment (par. 0115 – salt brine), wherein the first fluid is capable of a phase change between a liquid phase and a gaseous phase (par. 0080) using at least a geothermal temperature gradient (again, intended use) in the second fluid of the enclosed subterranean environment, wherein the phase changes in the first fluid of each of the plurality of lung modules are similar or dissimilar (encompasses all phase changes), and controllable such that the pod system has a variable density depending on an individual density of each of the plurality of lung modules at any given instance (again, intended use; since the system of the modified Dunn is capable of the use it meets the limitation of the claim; also see pars. 0127, 0132 regarding control and selection of fluids); and a tether (26) coupled between the first end of the pod system and an electric generator (30), whereby when the phase change occurs the pod system moves between the first position and the second position (Fig. 2, par. 0075) causing a rotor within a stator of the generator to rotate and thereby generate electrical energy (par. 0055), but fails to explicitly disclose a plurality of pod systems operable in different enclosed subterranean environments and coupled to drive a single centralized generator.
However, Razak discloses a similar power generating system that functions, like Dunn, based on buoyancy of lung modules, including a plurality of pod systems (210A-D; Fig. 20) is operable in different enclosed environments (190A-D) and are coupled to drive a single centralized generator (via shaft 200; pars. 0035, 0093). It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the plurality of pod systems disclosed by Razack into the system of the modified Dunn. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, as the resulting system would advantageously provide for continuous power generation and increase the power output of the system.
In reference to claim 24, the modified Dunn teaches the power generating system of claim 21, wherein in each of the plurality of lung modules, the piston (6; Dunn) sealingly separates the at least one first chamber (5) and the at least one second chamber (3) to prevent direct mixing of the first fluid and the second fluid (par. 0066).
In reference to claim 25, the modified Dunn teaches the power generating system of claim 24, wherein the first fluid produces a pressure differential across the piston that causes displacement of the piston relative to the at least one second chamber (Dunn; par. 0085).
In reference to claim 26, the modified Dunn teaches the power generating system of claim 24, wherein the at least one first chamber comprises the first fluid in a sufficient amount to cause the piston to move in response to phase changes in the first fluid, and regulate an amount of the first fluid and an amount of the second fluid within each of the plurality of lung modules, thereby varying the pod system's density (pars. 0085-0086).
In reference to claim 27, the modified Dunn teaches the power generating system of claim 26, wherein each of the plurality of lung modules comprises at least one port (Dunn; 17) in fluid communication with the at least one second chamber and the enclosed subterranean environment, such that the second fluid is introduced into the at least one second chamber or expelled from the at least one second chamber to facilitate movement of the pod system between the first position and the second position (par. 0085)
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over the modified Dunn as applied to claim 27 above, and further in view of US 2013/0318960 A1 to Chiu (Chiu).
In reference to claim 29, the modified Dunn teaches the power generating system of claim 27, but fails to explicitly teach a cylindrical portion between frustoconical portions. However, Chiu discloses a similar power generating system that functions, like the modified Dunn, based on buoyancy of lung modules (2; Fig. 3) wherein each of the plurality of lung modules comprises a cylindrical portion between frustoconical portions shaped to facilitate the second fluid to pass by with minimal resistance and subject minimal pressure or stress on each of the plurality of lung modules (see Fig. 3). It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the shape disclosed by Chiu into the system of the modified Dunn. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, as it has been held that changes in shape are a matter of choice absent persuasive evidence that the particular configuration is significant (MPEP 2144.04 IV B)
Response to Arguments
Applicant's arguments filed 27 April 2026 have been fully considered but they are not persuasive.
Applicant argues on p. 7, paragraph 3 that the modified Dunn fails to teach a controller. However, a controller specifically programmed to perform the function is not recited in the claim and the claim only requires the capability of control, which Dunn discloses in par. 0127.
Applicant argues on p. 7, paragraph 8 that Razak has a different principle of operation and thus a combination with Dunn would not be obvious. However, both systems operate on the principle of buoyancy thus making them analogous. Razak is relied upon only to demonstrate that it is known in the art to connect multiple buoyancy-driven pods located in separate environments via a single shaft to drive a single generator.
Applicant argues on p. 8 that Dunn does not disclose a piston that functions as a “sealing, fluid-isolating boundary”. However, Dunn clearly discloses a piston (6) and explicitly discloses that the piston sealingly separates the fluid found in the first chamber (5) from the fluid found in the second chamber (3) and the exterior environment in par. 0066.
Applicant also argues on p. 8 that Dunn does not disclose a pressure differential across a piston. However, Dunn explicitly discloses this feature in pars. 0087, 0096, 0097 and in Fig. 3.
The rejections in view of the modified Dunn are proper and remain.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN MATTHIAS whose telephone number is (571)272-5168. The examiner can normally be reached Monday-Wednesday 10am - 6pm Pacific Time.
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/JONATHAN R MATTHIAS/Primary Examiner, Art Unit 3746
04 May 2026
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